Argentina

The Argentine patent market has been beset by numerous challenges in recent years. Joint resolutions introduced in 2012 limited the patentability of inventions in the pharmaceutical and biotechnology spheres. The more recent Joint Resolution 283/2015 has further inhibited the scope of protection that can be afforded to inventions. Persistent economic woes and a large backlog of cases at the National Institute of Industrial Property (INPI) have not helped matters. However, far from a feeling of doom and gloom, optimism abounds. Since taking power at the end of 2015, the current government has been focusing on attracting foreign investors and new businesses to reinvigorate the market. Additionally, the INPI underwent an organisational shake-up over the last year, including the appointment of a new president. The new administration is already winning fans: it recently issued an expanded Patent Prosecution Highway programme for expedited prosecution and has indicated that other international agreements – such as the Patent Cooperation Treaty – are firmly on the table.

Firms: litigation and transactions

1

Marval O’Farrell & Mairal

2

G Breuer

3

Berken IP

Hausheer Belgrano & Fernandez

Mitrani Caballero Ojam & Ruiz Moreno

Noetinger & Armando

Palacio & Asociados

Firms: prosecution

1

Marval O’Farrell & Mairal

2

G Breuer

3

Berken IP

Clarke Modet & Co

Mitrani Caballero Ojam & Ruiz Moreno

Moeller IP Advisors

Noetinger & Armando

Obligado & Cia

Palacio & Asociados

Richelet & Richelet

Berken IP

“Berken IP is a standout firm – not just in Argentina, but in all of Latin America. You can easily reach its practitioners as they are accessible, reliable and will never leave you in the dark. They are enthusiastic about helping and understand clients' needs.” The “prestigious” and “efficient” boutique is “very well versed in patent matters” and has “recently increased its presence on the patent scene even further”. Leading a crew of in-house patent attorneys, Alicia Alvarez Berkenwald makes light work of all IP prosecution mandates. She also heads the patent intelligence department and excels at conducting searches and managing portfolios. “Both she and her firm are incredibly knowledgeable about patent issues. Their high-quality services come at a reasonable fee and her technical background is extremely solid. It is wonderful working with her.” Meanwhile, Pedro Berkenwald takes command of transactions and litigation. “His legal knowledge is extensive and he has a sharp intuition for business opportunities. Both he and his team are highly experienced in the pharmaceutical sector.” Berkenwald is supported in his endeavours by Federico Ulled; together they perform “outstanding work in the patent field. It is a pleasure working with them, as your concerns become their concerns – they really understand the importance of your business needs”.

Clarke Modet & Co

A ubiquitous presence in South America, Clarke Modet & Co is a popular first port of call for all phases of patent drafting and filing. An interconnected web of offices across the region – as well as additional hubs in Europe – give the efficient ensemble the strength and resources to handle a variety of cross-border matters, including international searches and multi-jurisdictional transactions. Former examiner Sulvia Zunino is a name for the address book.

G Breuer

With a history strecthing back almost 150 years, the “renowned” G Breuer is a legal institution. The “excellent” firm is “one of the largest and most significant IP outfits in the country” and possesses “a longstanding patent practice with technically astute individuals”. Its members are familiar figures in myriad IP organisations and have established a far-reaching network of professional links around the globe. Patent chief Martin Guerrico directs the “highly respected team” with a steady hand. The electrical engineer is “knowledgeable and experienced” and “especially good at prosecution matters”. Prolific writer Jorge Otamendi is “a remarkable practitioner with a deep understanding of intellectual property”. He is “a brilliant and very well-respected professional”.

Hausheer Belgrano & Fernandez

Hausheer Belgrano & Fernandez impresses across the gamut of IP law. Its all-encompassing patent services range from thorough, cost-efficient filings to complex transactional negotiations and support in critical disputes. Underpinned by a diligent team of technical experts, its pinpoint advice covers virtually every industry sector. It is a particular hit with international patent owners attempting to navigate the byzantine local landscape. Graciela Claudia Perez de Inzaurraga spearheads the foreign client department. A frequent speaker and author on key IP topics, she is a “meticulous and extremely hardworking lawyer”.

Marval O’Farrell & Mairal

“The most important IP law firm in Argentina”, Marval O’Farrell & Mairal is “unquestionably the market leader for patent work”. “It is not just the largest player, but also the most sophisticated – it is simply the best option here.” It possesses an unmatched squadron of technical professionals and patent attorneys, as well as a talented crew of translators. The venerable ensemble takes the lion’s share of domestic mandates, but has also been expanding its formidable regional presence as of late. Recently minted partner Cristian Bittel holds a PhD in biology and adroitly handles all filing and drafting instructions, especially in the pharmaceutical and agribusiness domains. “He always adds substantial value to the patenting process: he is very responsive and has deep knowledge of country-specific patent laws, which he applies to the advantage of his clients. Moreover, he is patient, informative and very helpful at providing litigation support, too.” Similarly, “Iván Alfredo Poli and Martín Bensadon are very experienced and have filed a considerable number of applications. There is no question that they are both well respected and intimately familiar with patent procedures”. An active voice in the IP community, Poli tackles sophisticated patent issues across the contentious/non-contentious boundary with poise, while Bensadon is a leading professor and esteemed author of two books on patent law. All contentious briefs are overseen by dexterous litigator Ignacio Manuel Sanchez Echague. “He is proactive in spotting ways to maximise the opportunities for IP protection and he makes an outstanding business partner.” Equally popular abroad, one foreign associate avers: “He is amazing – one of the best practitioners in the country."

Mitrani Caballero Ojam & Ruiz Moreno

Full-service outfit Mitrani Caballero Ojam & Ruiz Moreno has an overarching focus on excellence and maintains a consistency of standards that patent owners – both small and large – warmly appreciate. It dispenses sage guidance to national and international clients looking to acquire and exploit valuable IP rights; it also wins plaudits for its shrewd implementation of game-changing protection strategies and potent transactional capabilities. Iganacio Bérèterbide specialises in the transfer of IP assets. “He does a tremendous job in terms of drafting different types of contract and in providing advice on European Patent Office opposition cases – he gets great results.” He is also a talented litigator; as is Juan Carlos Ojam, who has lately been assisting Tenaris Connections in defending and expanding its worldwide patent portfolio. The versatile Mercedes Bullrich has also been instrumental in this endeavour.

Moeller IP Advisors

Moeller IP wields significant regional firepower: for over 30 years it has been prosecuting and enforcing the IP rights of international clients around Latin America, as well as in Mexico, the Caribbean and Europe. Large pharmaceutical companies frequently flock to its doors, although the adaptable set is also accomplished in myriad technical disciplines. The “fantastic” Gabriela Hanak has accumulated over three decades’ experience at the coalface and has spent almost half of that time leading the Moeller patent practice. She recently passed on the reins to newcomer Verónica Vater, who has a penchant for regulatory and plant variety rights issues. Regulatory law is also a forte of Mariano Municoy; he frequently lectures on the topic and on intellectual property at the Chicago-Kent College of Law.

Noetinger & Armando

Rigorous quality control and a forward-thinking, international outlook are hallmarks at Noetinger & Armando. The set is “well respected and a serious contender in the patent space”. Its IP practice has everything on lock, from searches and filings to deflecting infringements. The firm’s related corporate divisions also help to make light work of profitable technology transfer deals. Founding partner Fernando Noetinger is “superb in prosecution matters”. A statesman of the Argentine IP scene, he has held myriad influential positions in professional organisations and within the academic community. IAM Patent 1000 debutante Mariana Bullrich specialises in pharmacology, chemistry and biotechnology. “A very reliable and excellent patent attorney with a strong technical background, she has many years of experience and pays meticulous attention to detail.”

Obligado & Cia

The A-to-Z offering at boutique Obligado & Cia is informed by the team’s holistic perspective on intangible rights. The high volume of filings it processes never compromises quality; and should problems arise, its seamlessly integrated contentious and non-contentious divisions – both of which are armed with technical experts – are well positioned to provide incisive insight at a moment’s notice. Those in need of assistance would do well to seek out Federico Augusto Aulmann.

Palacio & Asociados

A perennial favourite of major global players, Palacio & Asociados scores top marks for its comprehensive patent services: “All applications are handled with care, speed and professionalism and its advice is consistently top notch.” “It is always a pleasure working with its practitioners, as they are very quick to respond, helpful and cost effective.” The firm’s dynamic team of engineers, attorneys and translators is particularly adept in the mechanical, chemical, electrical and telecommunications spaces. The “reliable” set has recently been drafting and prosecuting numerous applications around the world for the Odon device, an award-winning invention in the medicinal field. Patent leader Mingo Palacio spearheaded this initiative: “An exceptional patent and trademark attorney, he always displays excellent knowledge of IP law and practice and has the vision to devise the most appropriate strategy, especially in highly complex cases.”

Richelet & Richelet

One of the oldest IP outfits in Argentina, Richelet & Richelet has a profound understanding of the market and how best to get things done. Although steeped in over seven decades’ worth of experience, it adopts a modern and progressive approach that focuses on clients’ ultimate business goals. The “relatively young but incredibly smart” Gastón Richelet is the driving force behind the practice. “He is always informed on the latest topics and issues, and is very good on the prosecution front.” “Versatile and bright”, Richelet also “excels at litigation”.

Other recommended experts

A safe pair of hands for any conflict, Laura de Achával of Ferrer Reyes, Tellechea & Bouche crafts bespoke, effective patent protection strategies. Santiago Ferrer Reyes is a prosecution maven who is especially adept at advising oil industry clients. He is a founding partner and head of the patent division of Ferrer Reyes, Tellechea & Bouche. Berton Moreno & Asociados houses the exceptional Marcelo García Sellart. A prolific writer and speaker, he boasts an encyclopaedic knowledge of IP statutes and case law. Helena María Noir fronts the IP department of Solanet Moreno Hueyo & di Paola and leaves no stone unturned on all patent mandates going. “Efficient litigator” Claudia Serritelli is “a serious and very well-known patent attorney”. She recently became head of both the legal and patent departments at Estudio Chaloupka.